In March 2013, the European Commission published its proposals for an in-depth reform of the European trademark system. The main purpose was to modernise the three texts regulating trademark law in Europe, namely the 1989 Directive (2008/95/EC) approximating the laws of the Member States relating to trademarks, the 1994 Regulation (207/2009/EC) on the Community Trademark and the 1995 Commission Regulation (2869/95) on the fees payable to the Office for Harmonization in the Internal Market (OHIM). However, an additional purpose was also to push forward the harmonization efforts in all EU Member States to provide businesses, especially small and medium enterprises (SMEs), cheaper, quicker and more efficient access to trademark registration systems all over the EU, and better protection against counterfeits.

The recast of the Directive and the revision of the 1994 Regulation and the 1995 Commission Regulation is not only an excellent opportunity to amend outdated provisions, remove ambiguities, and clarify trademark rights in terms of their scope and limitations, but also to incorporate the principles developed by the Court of Justice in the major decisions issued in the past few years. For instance, proposals have been added to provide: that the description of goods and services must be clearly and precisely identified in the application (IP Translators, C-307/10); that a trademark owner is entitled to prohibit use of his trademark as a trade or company name (Céline, C-17/06); that use of a trademark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered constitute genuine use, regardless of whether or not the trademark in the form as used is also registered in the name of the proprietor (Rintisch, C-553/11), etc.

Trademarks with market reputation shall also benefit from an enhanced protection and bad faith shall become part of the absolute grounds for invalidity or refusal.

In reaction to the decision of the Court of Justice in the case Nokia/Phillips (C-446/09 and C-495/09) and in response to the concerns raised by trademark professionals and organizations in Europe, the European Parliament also adopted in February the Gallo-Rapkay amendment, allowing the European Customs to control and stop counterfeit goods in transit through the EU but destined for sale outside the EU (see page 6).

Incidentally, as a consequence of the Lisbon Treaty coming in to force, the Community Trademark Courts and the OHIM will also be renamed to become the European Trademark Courts and the European Union Trade Marks and Designs Agency.

Discussion continues in view of its possible adoption by the European Council in the next few months.